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I understand that a successful patent application can take several years from first filing to granted. I'm trying to understand what options a startup has in making progress on developing the product during this time. As far as I can tell, the idea must remain out of the public domain until the patent is granted. Therefore the only way I can release any details about the product is under non-disclosure agreement. This seems extremely limiting.

I was wondering if the idea can be released into the public domain (e.g. to sell an early version of the product) while the patent is pending (i.e. a provisional patent has been filed and a full application is being pursued) without invalidating the patent? I can't seem to find any clear yes or no answer on this.

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The answer is very clearly: you can release anything you want without invalidating your patent application. Actually, 18 months after the filing, the USPTO and most other patent offices will publish your application by themselfs even if it hasn't been granted then.

Legal basis can be found in 35. USC 102 which describes what is prior art (=what can invalidate your patent) where it says published "before the effective filing date".

With a few caveats:

For one, we just had a question about the risks.

Additionally, if you have filed the provisional but not the "real" application, you might want to add changes. However, those changes (basically any changes, explicitly also just rewording in many cases), as far as not contained in the original provisional application, will have a new filing date. Everything disclosed in between the new and the first/old filing date will be prior art - which could invalidate that part of your non-provisional / the respective claims.

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  • Thanks for the legal reference - nice to see law laid out in plain English. I assume UK law has a similar stipulation, however I can't find the exact sentence in this mountain of legalese. I will of course get professional advice however it's nice to get some pointers. Thanks.
    – James Allen
    Commented Apr 16, 2018 at 15:34
  • @JamesAllen yes, for european patents it's art 54, for the uk I don't know by heart, but if you search for novelty and or prior art plus uk you should find the relevant article.
    – user18033
    Commented Apr 16, 2018 at 17:02
  • @JamesAllen in that case read provisional and non provisional as “first application“ and “second application claiming priority, either national or ep or pct or any combination“.
    – user18033
    Commented Apr 16, 2018 at 17:03
  • @JamesAllen I've edited the answer to stress that any changes have that effect. However, after the 12 months that you have for coming priority, at the latest after the 18 months after which the application is published anyways, most problems go away.
    – user18033
    Commented Apr 17, 2018 at 9:23

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